The opinion of the court was delivered by: Shadur, Senior District Judge.
MEMORANDUM OPINION AND ORDER
Stimsonite Corporation ("Stimsonite") asserts that NightLine
Markers, Inc. ("NightLine"), Harry Lowe ("Lowe") and Charles O.
Hiler & Son, Inc. (collectively "NightLine," treated as a
singular noun) have infringed Stimsonite's U.S. Patent No.
5,277,513 ("'513 Patent") for snowplowable reflective highway
pavement markers.*fn1 Stimsonite asks for injunctive relief,
damages and an award of attorneys' fees and costs. NightLine has
counterclaimed for (1) a declaratory judgment of its
noninfringement or of the invalidity of the '513 Patent and (2)
an award of "its interests, costs and expenses" (whatever that
Stimsonite and NightLine have now filed cross-motions for
summary judgment that address only the infringement issue.*fn2
Each side has complied with this District Court's General Rules
("GR") 12(M) and 12(N),*fn3 which have been adopted to highlight
the existence or nonexistence of any material factual disputes.
Both motions are fully briefed and ready for decision. For the
reasons set out in this memorandum opinion and order, NightLine's
motion for summary judgment
is granted, while Stimsonite's motion is denied.
Summary Judgment Standards
Familiar Rule 56 principles impose on a party seeking summary
judgment the burden of establishing the lack of a genuine issue
of material fact (Celotex Corp. v. Catrett, 477 U.S. 317,
322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)). For that purpose
this Court must "read the record in the light most favorable to
the non-moving party," although it "is not required to draw
unreasonable inferences from the evidence" (St. Louis N. Joint
Venture v. P & L Enters., Inc., 116 F.3d 262, 265 n. 2 (7th Cir.
1997)). Where cross-motions for summary judgment are involved, it
is thus necessary to adopt a dual perspective that sometimes
forces the denial of both motions. Fortunately that is not the
Stimsonite has been developing and selling snowplowable
reflective highway pavement markers for more than three decades.
Those products are installed in highways to demarcate both the
lines between lanes of traffic and the outer edges of the
highways by reflecting light from automobile headlights to make
the lanes and highway edges more visible at night. Such markers
necessarily rise slightly above the surface of the highway to
catch and reflect the light from the headlights. But that
requirement causes problems in colder climates, where snowplows
often have to remove snow from roadways. To be "snowplowable,"
such markers must be capable of withstanding the impact of a
snowplow blade without being dislodged from the pavement.
Furthermore, snowplowable markers must be able to handle
snowplow blades that strike them at an angle. As a practical
matter snowplows do not simply move snow straight ahead — instead
the plow blades are angled to push the snow to one side of the
road. In 1980 Stimsonite obtained U.S. Patent No. 4,195,945
("'945 Patent")*fn4 for a snowplowable marker that could handle
plow blade angles of roughly 30° ('945 Patent col. 2 line 17). It
manufactured its model 96 and 96LP markers under that now-expired
But in recent years highway snowplows have been operating at
higher speeds and with the use of greater blade angles. With that
in mind, in the early 1990s Stimsonite developed a marker that
could accommodate a snowplow blade angle of 50° — an asserted
improvement over its prior products. In 1994 Stimsonite patented
its new device, and that is the '513 Patent*fn5 at issue in this
Snowplowable markers typically comprise a plastic reflector
mounted on an iron base. That base includes two ramps set side by
side, with a reflector perpendicularly mounted between and below
those ramps, thus creating a roughly "H" shape (viewed from
above). That construction is designed to enable the snowplow
blades to ride up and over the ramps without hitting the plastic
reflector. Both the '945 and '513 Patents cover inventions whose
ramps allow snowplowing in either direction. Stimsonite's '513
Patent describes a longer, narrower product than the prior art
described in the expired '945 Patent, assertedly because that
difference in dimensions allows the new invention to accommodate
the greater plow blade angles.
Lowe is a former Stimsonite employee who now owns and is the
only employee of NightLine (N. 12(M) ¶ 8). In recent years Lowe
has attempted — both successfully and unsuccessfully — to
introduce snowplowable markers into the market to compete with
Stimsonite's products. For example, Lowe successfully
manufactures the NightLine A250 marker, which is very similar to
Stimsonite's products under the now-expired '945 Patent (S.12(M)
¶ 90). Lowe has previously failed, however, in his efforts to
market another marker — the NightLine 250 marker — because
Stimsonite sued him for infringement of the '513 Patent, to which
by agreeing to stop making the 250 marker (S.12(M) ¶¶
Lowe renewed his efforts to compete with Stimsonite's new
markers by designing the NightLine B250 and B350 markers, the
accused products in this case, and by advertising them as
competitive with the Stimsonite 101 and 101LP markers, which
practice the '513 Patent's art (S.12(M) ¶¶ 92-93).*fn7
Stimsonite employees saw NightLine's new markers at a June 1997
trade show, after which Lowe gave Stimsonite his detailed
drawings in an effort to demonstrate that no infringement was
involved. Stimsonite was not satisfied, and it filed this
infringement suit 10 months later.
Patent owners have a monopoly on their inventions during the
term of their patents. But as the seminal opinion in Singer Mfg.
Co. v. June Mfg. Co., 163 U.S. 169, 185, 16 S.Ct. 1002, 41 L.Ed.
118 (1896) teaches:
It is self-evident that on the expiration of a patent
the monopoly created by it ceases to exist, and the
right to make the thing formerly covered by the
patent becomes public property. It is upon this
condition that the patent is granted. It follows, as
a matter of course, that on the termination of the
patent there passes to the public the right to make
the machine in the form in which it was constructed
during the patent.*fn8
Thus our American patent system serves two equally important
goals: to secure the patentee's rights (the definitional goal)
and to put others on notice of what the patentee has removed from
the public domain for the life of the patent (the notice goal)
(Markman v. Westview Instruments, Inc., 517 U.S. 370, 373, 116
S.Ct. 1384, 134 L.Ed.2d 577 (1996), quoting McClain v.
Ortmayer, 141 U.S. 419, 424, 12 S.Ct. 76, 35 L.Ed. 800 (1891)).
To fulfill those dual functions, patent documents include both
a claim and a specification. According to 35 U.S.C. § 112*fn9
"[t]he specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art . . . to make and use the same." On the
other hand, the claim must "particularly point  out and
distinctly claim the subject matter which the applicant regards
as his invention" (id.). Indeed, the ...